The patents alleged to have been infringed are part of a worldwide portfolio that Conversant has offered to license on FRAND (fair, reasonable and non-discriminatory) terms. I discussed such licences in FRANDon8 Oct 2017 and FRAND - a Postcripton 16 Jan 2018. Huawei and ZTE have not yet taken up Conversant's offer. They dispute the validity of Conversant's patents. They deny that those patents are essential to standards with which they wish to comply. They argue that even if the patents are valid and essential they have not infringed them. They contend that if they are wrong on any of the foregoing points they are still entitled to a licence on FRAND terms, but they further contend that the terms that they have been offered by Conversant are far from FRAND.

As Conversant intends to license its patents and as Huawei and ZTE intend to take a licence this litigation is essentially over the terms of such licence. Because those terms will depend ultimately on which patents are valid, which are essential to the standard and which have been infringed that cannot be decided by an English court since most of the disputed patents are in China where Huawei and ZTE do most of their business, those companies argued that an English court did not have jurisdiction to decide the terms of a worldwide FRAND licence or, if it did, it was not the appropriate forum. Huawei and ZTE further argued that they have not been properly served in England and urged the court not to allow Conversant to serve them in China on the grounds that it had no jurisdiction to determine the issue or was not the appropriate forum.

The application came on before Mr Justice Henry Carr who dismissed the application and gave Conversant permission to sue Huawei and ZTE outside the jurisdiction at paragraph [117] of his decision.

It was common ground that the court lacked jurisdiction to determine the validity of any foreign patent or whether it had been infringed but the judge reasoned that that did not affect the court's jurisdiction to determine the terms of a worldwide licence. If a Chinese patent is held to be invalid or not infringed that patent and any royalties payable in respect of it will simply fall away. Moreover, the question whether the licence proposed by Conversant was or was not FRAND was irrelevant to the infringement proceedings that were already before the judge or any invalidity counterclaim that the defendants might bring.

The remainder of the judgment was concerned with whether the Chinese companies had been validly served and, if not, whether permission should be given for them to be served outside the jurisdiction. The proceedings were served on a companies in England that were neither defendants nor subsidiaries of the Chinese defendants. The judge held that was not good service and gave Conversant permission to serve those companies abroad.

In this case Mr Justice Henry Carr referred to and relied heavily on the decision of Mr Justice Birss in Unwired Planet International Ltd v Huawei Technologies Co. Ltd and another (Rev 2) [2017] EWHC 2988 (Pat) (30 Nov 2017). Mr Justice Henry Carr was urged not to follow that judgment on the ground that it had been decided wrongly but he refused to do so. However, Unwired Planet is under appeal. If that appeal is successful it may also be necessary to revisit this decision.

Anyone wishing to discuss this case or FRAND generally should call me on 020 7404 5252 or send me a message through my contact form.

This was an appeal by the National Guild of Removers & Storers ("NGRS") against an award of £1,275 damages in its favour by District Judge Vary for passing off. By dismissing that appeal, His Honour Judge Hacon seems to have settled a 7 year controversy as to what should be the correct measure of damages for what is often an inadvertent misrepresentation of continued membership of the NGRS by a removal or storage business that no longer wishes to remain a member of that guild.

In Caspian Pizza Ltd and Others v Shah and Another [2015] EWHC 3567 (IPEC) (9 Dec 2015) Judge Hacon dismissed a claim for trade mark infringement and passing off. The trade marks relied upon were the device mark that appears above and the word mark CASPIAN. The judge declared the word mark invalid because the defendants had run a restaurant called "CASPIAN" in another part of the country which constituted an "earlier right" within the meaning of s.5 (4) of the Trade Marks Act 1994. However, he did not declare the device mark invalid on the ground that the defendants had no goodwill in the running chef logo. I blogged about the case in Caspian Pizza Ltd and Others v Shah and Anotheron 24 Jan 2016.

The claimants appealed to the Court of Appeal against the invalidation of the word mark on the grou…